A heap of skill and diligence is required in drafting a techno-legal document, namely a patent. Since the patent right is a proprietary right, the patent office will only grant the patent for the actual innovation and will aim at preventing moving any technology from the public domain or that belonging to another person to the Applicant. If the Applicant claims the invention broadly, he/she risks, at the least objections from the patent office, in which case there may have to amend the patent claims or provide enough arguments to get over the objections. This may trigger the concept of prosecution history estoppel or file wrapper estoppel. Therefore, it is paramount to claim the invention just broad enough to encompass closely related variations of the invention. It is here that the patent attorney’s expertise comes into the picture.
The form of the patent document contains the title of the invention, followed by the field of invention, the background, summary, description, claims, abstract and drawings. Each section has a specific role and the most important of it is the claims followed by the description. Claims go after the specification and a claim must be a single sentence. The Claims and in turn the entire specification is to be compliant with §101, §102 and §103, thereby requiring the invention to be of the allowable subject matter and that which will not fall under any of the judicial exceptions created. They must also be novel and non-obvious.
The USPTO allows for multiple independent claims around the same invention in the form of a system and a method. The means clauses encompass the corresponding structure, material, or process steps defined in specification and equivalents with the USPTO. Every corresponding structure performing the function must be described/included in the specification with each one being enabled, otherwise, the claim is considered invalid.
According to the USPTO, if an application claims 2+ inventions, the application may be required to be restricted to just one of the invention by filing a Divisional Application. A Divisional Application’s effective priority date is the original filing date, this requirement costs patentee exclusivity time while messing around. The PTO likely to invoke a restriction requirement under §121 in the following cases:-
- When the claims in one application are directed to different statutory classes
- When the broadest independent claims overlap
- When the invention has multiple patentable features
- When a chemical invention has many species
- When a Biotech invention is claimed in many ways
The claims are read in light of the specification first, also known as the intrinsic evidence and only in case if that leaves an ambiguity is an extrinsic evidence like that of dictionaries referred when there is a question of interpretation of the claims. (Philips v AWH). Therefore, the claims need to be drafted keeping these in mind. There are different types of claims used in claiming to different subject matters like process claims, product by process claims, apparatus claims, diagnostic kit claims, markush claims which allow the claiming of the alternatives specifically in chemistry, Jepson claims, which are claims drawn over an existing invention and the like.
As far as the Specification is concerned, the written description should satisfy the utility requirement, the enablement and the best mode requirements. The utility claim must be credible and should include both the specific and the substantial utility. Specific utility means specific to the subject matter claimed, not general to the field of invention and Substantial utility means the real-world use, where no substantial research should be required in determining what is that said use. It is important to note that the Specification does not have to explain how or why the invention works, however, undue experimentation must not be required to produce the invention.
Undue experimentation may be determined by the following factors:
- Quantity of experimentation required
- Amount of direction or guidance presented
- Presence or absence of working examples
- Nature of the invention
- State of the prior art
- Relative skill of those in the art
- Predictability of the art
- Breadth of the claims
It is also important to note that just because required experimentation is difficult or time-consuming does not mean it’s undue. The specification shall also state the best mode as conceived by the inventor for carrying out his/her invention. The Best Mode Requirement Applies Only to Claimed Subject Matter and to Unclaimed Elements Necessary to the Operation of the Invention. Only the Best Mode as of the Filing Date Need to be Disclosed. The Best Mode is not necessarily the Eventual Commercial Method that would be adapted to scale up. A patent application does not satisfy best mode requirement if it is misleading as to the method of obtaining best mode. Another method of concealment is to fully describe a lesser alternate method while insufficiently disclosing the best mode. This may supposedly mislead the reader into thinking the more detailed method is the best mode, invalidating the patent. In most cases, a working example is an effective way to disclose the best mode, especially in complex technologies. However, a working example is not always required. If the disclosure is sufficient for the PHOSITA to practice the best mode without undue experimentation.
Drawings are required to understand the invention. Process claims usually don’t require drawings, but where an unconventional apparatus is required to practice the invention, for example, the application must adequately disclose the apparatus, which may require drawings. Drawings can be used in litigation to interpret the meaning of ambiguous claims, should such a need arise.
The courts have delved into the claim interpretation and the enablement and the best mode requirements in some detail. The United States Patent Office also has a detailed manual, the MPEP, which in some detail describes the rules that should be adhered to by the Applicant while drafting the patents. The failure to meet the said requirements are addressed by the Examiner of the USPTO by issued formality objections even before a substantial examination and issuing the Office action. The more serious objections which may arise affecting the patentability of the invention is issued in the first office action. Though these objections may be overcome during the prosecution of the Application, it is paramount to draft the patent Application with the assiduousness it mandates.
We at OutsourceIP are proficient with the MPEP and the procedures of the USPTO and we keep ourselves abreast of the latest decisions of the US Courts which potentially may affect the patent writing/drafting strategies. Thus, the team is capable of supporting you in claim drafting and specification drafting along with Illustrations of the drawings.